Archive for October, 2020

Oral argument of the day: Bikram’s Yoga College of India v. Evolation Yoga

Monday, October 26th, 2020

It is interesting that the 1952 Patent Act sets forth what is patent eligible in 35 U.S.C. §101 but does not expressly recite any exceptions. In contrast, the 1976 Copyright Act sets forth what is copyrightable in 17 U.S.C. §102(a) and Congress did expressly recite exceptions in 17 U.S.C. §102(b).

Today’s oral argument is a few years old. It is the Ninth Circuit oral argument of Bikram’s Yoga College of India v. Evolation Yoga, 803 F.3d 1032 (9th Cir. 2015). The case addressed whether a sequence of twenty-six yoga poses and two breathing exercises is entitled to copyright protection. Because the case was argued at the Ninth Circuit, there is video of the argument.

You can read the Ninth Circuit opinion here: [Link].

Quotes of the day

Friday, October 23rd, 2020

As the nation’s lone patent court, we are at a loss as to how to uniformly apply § 101. All twelve active judges of this court urged the Supreme Court to grant certiorari in Athena to provide us with guidance regarding whether diagnostic claims are eligible for patent protection. There is very little about which all twelve of us are unanimous, especially when it comes to § 101. We were unanimous in our unprecedented plea for guidance. 

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 2).

Section 101 is clear: “[w]hoever invents or discovers any new and useful process,” like the claims here, “may obtain a patent.” Yet, we have struggled to consistently apply the judicially created exceptions to this broad statutory grant of eligibility, slowly creating a panel-dependent body of law and destroying the ability of American businesses to invest with predictability. 

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 2).

The majority concluded as a matter of law that claims to a manufacturing process are not eligible for patent protection because they are directed to a law of nature even though no law of nature appears in the claims, the patent, or the prosecution history. Under the majority’s new “Nothing More” test, claims are ineligible when they merely make use of a natural law. 

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 3).

Instead, our decision in American Axle is a patent killing judicial exception of our own creation. The claims here are directed to a process for manufacturing car parts—the type of process which has been eligible since the invention of the car itself. They do not preempt the use of a natural law, a building block of science, which should be freely available to all. To nonetheless hold these claims ineligible, the majority broadens the judicial exceptions in a way that threatens to swallow the whole of the statute. Such a rejection of the plain language of the patent statute in favor of a vast and amorphous judicial exception in which we Federal Circuit judges get to decide de novo not just the legal principles, but the application of the science itself, cannot stand.

AMERICAN AXLE & MANUFACTURING, INC. v. NEAPCO HOLDINGS LLC, NEAPCO DRIVELINES LLC, 2018-1763, Order (Fed. Cir. October 23, 2020)(Judge Moore concurrence at page 4).

Once upon a midnight dreary, while I pondered, weak and weary,
Over many a quaint and curious volume of forgotten lore—
    While I nodded, nearly napping, suddenly there came a tapping,
As of some one gently rapping, rapping at my chamber door.
“’Tis some visitor,” I muttered, “tapping at my chamber door—
            Only this and nothing more.”

“The Raven” by Edgar Allan Poe, first stanza.

You can read the entire concurring opinion here: [Link].

You can read “The Raven” by Edgar Allan Poe here: [Link].

Supreme Court sets briefing schedule in Arthrex

Thursday, October 22nd, 2020

The Supreme Court has set the briefing schedule for the Arthrex case. The docket from yesterday shows this entry:

Petitioners in Nos. 19-1434 and 19-1452 shall each file an opening brief, limited to 13,000 words, on or before Wednesday, November 25, 2020. Amicus curiae briefs in support of petitioners in Nos. 19-1434 or 19-1452, or in support of no party, shall be filed on or before Wednesday, December 2, 2020, and the briefs shall bear a light green cover. Petitioner in No. 19-1458 shall file a consolidated opening and response brief, limited to 17,000 words, on or before Wednesday, December 23, 2020. Amicus curiae briefs in support of petitioner in No. 19-1458 shall be filed on or before Wednesday, December 30, 2020, and the briefs shall bear a dark green cover. Petitioners in Nos. 19-1434 and 19-1452 shall each file a consolidated response and reply brief, limited to 14,500 words, on or before Friday, January 22, 2021. Petitioner in No. 19-1458 shall file a reply brief, limited to 6,000 words, pursuant to Rule 25.3 of the Rules of this Court. VIDED.

Here are some of my earlier posts covering the Arthrex and Polaris cases:

Pending case of note: Polaris v. Kingston

Kingston files brief in Polaris v. Kingston and addresses the role of PTAB judges

Reply brief filed in Polaris v. Kingston — are APJ’s unconstitutionally appointed principal officers?

The Judicial Oath’s Impact on Determining Who is a Principal Officer

Federal Circuit Entertains Arguments on Whether PTAB Judges Were Constitutionally Appointed

What will the fallout be from Arthrex v. Smith and Nephew?

Supplemental Briefs filed in PTAB Judges Appointments Clause case — Arthrex v. Smith & Nephew

Oral Argument of the Day: Polaris v. Kingston

Peeking behind the curtain

Who is left from the In re Alappat panel?

En banc review requested in Polaris v. Kingston, on Arthrex issues

Will Bullock v. BLM have any impact on Arthrex/Polaris?

En banc oral argument of NOVA v. Secretary of Veteran Affairs

Tuesday, October 20th, 2020

The Federal Circuit sat en banc on October 8, 2020 to hear an oral argument in a non-patent case. I think en banc oral arguments are interesting regardless of whether they are patent cases. For one, the judges tend to be on their best behavior when in front of all their peers. For another, the judges seem to approach the questioning with a little bit more advocacy toward their positions than they seem to do in a three-judge oral argument.

I have not had a chance to listen to the entirety of this oral argument yet, as it is a doozy — it lasted well over two hours. I’m pretty sure that is the longest oral argument at the Federal Circuit that I have downloaded since mid-2006.

One interesting thing I noticed was that Chief Judge Prost organized the oral argument to allow questioning to take place by seniority level.

You can listen to the oral argument here: [Link].

The questions presented are:

1. Are the allegations of the Petition sufficient to establish standing, even without any evidence from NOVA, given that the Secretary does not challenge standing, or must NOVA submit evidence to establish Article III standing, see Phigenix, Inc. v. Immunogen, Inc., 845 F.3d 1168, 1171-73 (Fed. Cir. 2017)Shrimpers & Fishermen of RGV v. Texas Commission on Environmental Quality, 968 F.3d 419, 423-24 (5th Cir. 2020) (citing cases from six other circuits)?

2. Is there evidence that, at the time of the Petition, NOVA had members with standing to challenge the provisions at issue?

3. Does NOVA have standing on any basis apart from having had members who would have had standing to challenge the provisions at issue?

4. Whether this court has jurisdiction under 38 U.S.C. § 502 to review provisions of the Department of Veterans Affairs’ Adjudication Procedures Manual M21-1 that are binding on the agency’s initial adjudicators but not on the Board of Veterans’ Appeals, and whether this court should overrule Disabled American Veterans v. Secretary of Veterans Affairs, 859 F.3d 1072 (Fed. Cir. 2017).

5. Whether the time for filing a direct action for judicial review under 38 U.S.C. § 502 is governed by the 60-day deadline specified by Federal Circuit Rule 47.12(a) or only by the six-year statute of limitations in 28 U.S.C. § 2401(a).

Judge Moore recused herself from this appeal.

Update 10/22/20:

One interesting sound bite from the en banc oral argument was when Judge Chen inquired about other agency manuals and whether they would also be required to be published in the Federal Register.

As an aside, you might recall that then-Judge Gorsuch of the Tenth Circuit Court of Appeals did not appear to be a big fan of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) [Link].

In other news, the USPTO published in the Federal Register a “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board.” The USPTO is considering the codification of its current policies and practices, or the modification thereof, through rulemaking and wishes to gather public comments on the Office’s current approach and on various other approaches suggested to the Office by stakeholders. To assist in gathering public input, the USPTO is publishing questions, and seeks focused public comments, on appropriate considerations for instituting AIA trials.

Article suggestion: (1) What manuals of the USPTO have been published in the Federal Register (and when); and, (2) do any of the manuals that were not published in the Federal Register have provisions that are generally applicable interpretive rules promulgated by the USPTO through those manuals?

For followers of the Arthrex case, Judge Chen also asked if members of the Board of Veterans’ Appeals (BVA) are employees or officers:

The Federal Circuit Blog has a nice recap of this oral argument: [Link].

Will Bullock v. BLM have any impact on Arthrex/Polaris?

Sunday, October 11th, 2020

I was watching the debate between two of Colorado’s candidates for Senate last week and the case of Bullock v. United States Bureau of Land Management, No. 4: 20-cv-00062-BMM (D. Mont. Sept. 25, 2020) came up as one of the questions. In that case the person acting as the Head of the Bureau of Land Management, an agency within the Department of Interior, was removed by a US District Judge in Montana for violation of the Appointments Clause of the US Constitution — namely acting as an officer of the United States without the consent of the Senate. Moreover, all of his functions and duties during the time of his improper tenure were declared invalid.

It brought to mind the Arthrex and Polaris cases and their pending petitions for writs of certiorari at the US Supreme Court.

The judge in Bullock v. United States Bureau of Land Management, No. 4: 20-cv-00062-BMM (D. Mont. Sept. 25, 2020) concluded his decision by stating:

The APA requires courts to “hold unlawful and set aside agency action, findings, and conclusions found to be . . . arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” Id. § 706(2)(A). A court cannot “substitute its judgment for that of the agency.” Citizens to Preserve Overton Park, Inc. v. Volpe, 401 U.S. 402, 416 (1971). A court instead must ensure that the agency has “examine[d] the relevant data and articulate[d] a satisfactory explanation for its action.” Motor Vehicle Mfrs. Assn. of United States, Inc. v. State Farm Mut. Automobile Ins. Co., 463 U.S. 29, 43 (1983). The Secretary’s failure to perform the functions and duties of BLM Director as required under the FVRA and instead delegate those decisions to an improperly appointed Acting BLM Director would render any decisions issued by that Acting BLM Director arbitrary and capricious as not issued “in accordance with law.” 5 U.S.C. § 706(2)(A). See also SW General, Inc. v. N.L.R.B., 796 F.3d 67, 79 (D.C. Cir. 2015), aff’d on other grounds,___ U.S. at ____, 137 S. Ct. at 938 n.2 (“The Board did not seek certiorari on this issue, so we do not consider it.”).

The Court recognizes that any “function or duty” of the BLM Director that has been performed by Pendley would have no force and effect and must be set aside as arbitrary and capricious. See 5 U.S.C. §§ 3348(d), 706(2)(A). These acts appear to include, but not be limited to, the Missoula RMP and the Lewistown RMP. The Court will direct the parties to provide further briefing on these actions and any other BLM Director exclusive functions or duties that Pendley may have performed.

You can read the entire opinion here:

STEVE BULLOCK, in his official capacity as Governor of Montana; MONTANA DEPARTMENT OF NATURAL RESOURCES AND CONSERVATION, Plaintiffs,
UNITED STATES BUREAU OF LAND MANAGEMENT, an agency within the United States Department of the Interior; WILLIAM PERRY PENDLEY, in his official capacity as the person exercising authority of the Director of the Bureau of Land Management; UNITED STATES DEPARTMENT OF THE INTERIOR; DAVID BERNHARDT, in his official capacity as Secretary of the United States Department of the Interior, Defendants.

No. 4:20-cv-00062-BMM.

United States District Court, D. Montana, Great Falls Division.September 25, 2020.


BRIAN MORRIS, Chief District Judge.


The Governor of Montana and the Montana Department of Natural Resources and Conservation (“Plaintiffs”) bring this action against the U.S. Bureau of Land Management (“BLM”), William Perry Pendley in his official capacity, and various government agencies and agents in their official capacities (together, “Federal Defendants”). Plaintiffs allege that Pendley unlawfully served as Acting BLM Director in violation of the Appointments Clause of the U.S. Constitution, the Federal Vacancies Reform Act of 1998 (“FVRA”), and the Administrative Procedure Act (“APA”). (Doc. 1).

Plaintiffs seek declaratory and injunctive relief. (Doc. 1 at 29). Specifically, Plaintiffs seek an order and judgment declaring Pendley’s service as Acting Director of BLM unlawful; enjoining Pendley from exercising the authority of the Director; enjoining Department of the Interior (“Interior”) Secretary David Bernhardt from directing Pendley to exercise the authority of the Director; and granting any other relief deemed appropriate. Id. Plaintiffs filed what they fashioned as an Expedited Motion for Summary Judgment on August 20, 2020. (Doc. 10). Federal Defendants argue that Plaintiffs lack standing to bring their claims. (Doc. 17 at 1-2). Federal Defendants argue, in the alternative, that Pendley exercises the authority of BLM Director through lawful delegation. Id. at 2-3.


Factual Background

BLM manages the use and maintenance of 245 million acres of federal public lands (around 12 percent of the nation’s landmass) and 700 million acres of subsurface acreage (around 30 percent of the nation’s minerals). The Federal Land Management and Policy Act (“FLPMA”) charges BLM with administering those lands and subsurface acres. FLPMA requires that “the public lands be managed in a manner that will protect the quality of scientific, scenic, historical, ecological, environmental, air and atmospheric, water resource, and archeological values.” 43 U.S.C. § 1701(a)(8). Congress established the office of Director to lead BLM. By statute, the Director of the BLM must be filled “by the President, by and with the advice and consent of the Senate.” Id. § 1731(a).


Is the key to a patent eligibility change a transfer of power?

Friday, October 2nd, 2020

I am never too sure how much power a Chief Judge of an appellate court actually wields. However, it is interesting to note that Chief Judge Prost turns 70 on May 24, 2021 — just shy of her seventh anniversary as Chief Judge (May 30, 2021). The rules state that a judge shall serve as Chief Judge no longer than seven years nor past the age of 70. Therefore, the next Chief Judge will be Judge Moore. It will be interesting to see if the change in Chief Judge produces a better consensus on the court in the law of patent eligibility. One can hope.

It will also be interesting to see if the Federal Circuit renews its efforts to invite district court judges, retired Supreme Court justices, and retired Federal Circuit judges to sit by designation with the Federal Circuit. Chief Judge Michel seemed to encourage the former; but, I think that effort has waned since his tenure.